1. law, govt and politics

SAINT LOUIS UNIVERSITY SCHOOL OF LAW
NOTICE, TAKEDOWN, AND THE GOOD-FAITH STANDARD:
HOW TO PROTECT INTERNET USERS FROM BAD-FAITH
REMOVAL OF WEB CONTENT
I.
II.
INTRODUCTION ....................................................................................... 613 THE LAW ................................................................................................ 617 A. The Digital Millennium Copyright Act............................................ 617 B. Diebold ............................................................................................ 619 C. Michael Rossi .................................................................................. 621 D. Karen Dudnikov & Troy Augusto ................................................... 622 III. STEPHANIE LENZ .................................................................................... 625 IV. ANALYSIS ............................................................................................... 628 A. Factual Basis for Good-Faith Belief ............................................... 628 B. Legal Basis for Good-Faith Belief .................................................. 630 C. Shift the Burden of Proof................................................................. 631 V.
CONCLUSION .......................................................................................... 636
I. INTRODUCTION
At the time of this writing, 12 years have passed since Congress enacted
Title II of the Digital Millennium Copyright Act (“DMCA”),1 which was
intended to balance the urgent need for copyright protection on the Internet2
against the equally pressing need to protect Internet service providers (“ISPs”)
from secondary liability for copyright infringement.3 The rights of three
parties are involved: (1) copyright owners, who create expressive works for
publication, (2) ISPs, who provide access to the Internet and services on the
Internet, and (3) Internet users.
Congress’s balancing Act resulted in a “safe harbor” provision within the
DMCA for ISPs.4 According to the provision, as long as ISPs promptly
respond to allegations of copyright infringement sent to them by a copyright
1. 17 U.S.C. § 512 (2006).
2. Rossi v. Motion Picture Ass’n of Am., 391 F.3d 1000, 1003 (9th Cir. 2004) (citing S.
REP. NO. 105–190 at 21 (1998)).
3. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1200–01 (N.D. Cal. 2004).
4. § 512.
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owner, they are protected from liability for having hosted and distributed any
infringing material uploaded by Internet users.5
An issue has arisen that reveals a thumb on the balance scale in favor of
two parties—copyright owners and ISPs—at the expense of the third—Internet
users. The DMCA permits the party who is in the best position to assess
whether infringement is taking place, the copyright owner,6 to remove content
from the Internet quickly while bearing little burden of showing any actual
copyright infringement.7 The copyright owner sends what is known as a
“takedown” notification to the ISP to have the allegedly infringing content
removed. Upon receiving the notification, the ISP removes the content and is
absolved of liability. But the copyright owners need only have a subjective
good-faith belief that their work is being infringed in order to send the
takedown,8 and subjective good faith is a low threshold for an extrajudicial
process, particularly when free speech is at stake.9
Takedowns often mask ulterior motives, such as silencing criticism of a
religion.10 Copyright owners are sending takedown notifications by the
millions,11 removing the online content of business competitors,12 video
5. § 512(c)(1)(C) (“A service provider shall not be liable for monetary relief . . . for
infringement of copyright by reason of the storage at the direction of a user of material that
resides on a system or network controlled or operated by or for the service provider, if the service
provider . . . upon notification of claimed infringement . . . responds expeditiously to remove, or
disable access to, the material that is claimed to be infringing or to be the subject of infringing
activity.”). There are other requirements for safe harbor that are not the subject of this paper. For
instance, the ISP must not have actual knowledge of infringing material. § 512(c)(1)(A)(i).
6. See Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1113 (9th Cir. 2007) (“The DMCA
notification procedures place the burden of . . . identifying the potentially infringing material . . .
squarely on the owners of the copyright.”); see also 3 MELVILLE B. NIMMER & DAVID NIMMER,
NIMMER ON COPYRIGHT § 12.11 (Matthew Bender, Rev. Ed.) (In copyright-infringement
litigation, “the plaintiff bears the burden of proof on the prima facie case”).
7. See Rossi, 391 F.3d at 1007 (holding that the DMCA requires only a subjective goodfaith belief by the copyright holder that online content is infringing).
8. § 512(c)(3)(A)(v).
9. See Jennifer M. Urban & Laura Quilter, Efficient Process or “Chilling Effects”?
Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, 22 SANTA CLARA
COMPUTER & HIGH TECH. L.J. 621, 682 (“[T]he implications for expression on the Internet of
this extrajudicial process appear, from our limited data, significant. Removal of speech from the
Internet, with very little or no process, is a strong remedy for allegations of infringement.”).
10. See Nate Anderson, Scientology Fights Critics with 4,000 DMCA Takedown Notices,
ARS TECHNICA, Sept. 8, 2008, http://arstechnica.com/old/content/2008/09/scientology-fightscritics-with-4000-dmca-takedown-notices.ars; Doug Bedell, Marketers Join Fight on Spam, THE
DALLAS MORNING NEWS, Nov. 7, 2002, at 3D (“The Church of Scientology got Google to
remove links to certain Web sites critical of the religion, citing potential violations of the Digital
Millennium Copyright Act.”).
11. Kevin J. Delaney, YouTube Magic: Now You See It, Now You Don’t: Hired Eyes Make
Sure that Copyrighted Videos Are Yanked from the Web, WALL ST. J., Aug. 8, 2007, at A1
(copyright-enforcement company Bay TSP sends over one million takedown notices each month).
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bloggers,13 hobbyists,14 critics,15 and others engaging in political speech—
including both presidential candidates in 2008.16 For example, during the
Olympics in Beijing, the International Olympic Committee ordered the
removal of a protest video by Students for a Free Tibet.17 The video’s title
suggested the video contained copyrighted Olympic footage.18 Instead it was
the students protesting China’s policies. Either the International Olympic
Committee never watched the video or the real reason for the takedown was to
silence the students. The problem is that copyright owners do not need to meet
any objective criteria when accusing Internet users of copyright infringement.
The forgotten party in the notice-and-takedown exchange is the innocent
Internet user whose material vanishes from the Internet. The DMCA does
include a “putback” provision for Internet users that allows them to restore
their content by sending a counter notification,19 but ISPs are not required to
inform users how to use it,20 and consequently it receives little use.21
Moreover, the putback provision will not always help Internet users because
12. Biosafe-One, Inc. v. Hawks, 524 F.Supp.2d 452, 458 (S.D.N.Y. 2007); Urban, supra
note 9, at 651 (the authors’ data show that 55% of the takedown notices sent to the Google search
engine were competitor related).
13. Wendy Seltzer, DMCA “Repeat Infringers”: Scientology Critic’s Account Reinstated
After Counter-Notification, CHILLING EFFECTS, June 6, 2008, http://www.chillingeffects.org/
weather.cgi?WeatherID=605.
14. See, e.g., Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1151–52 (N.D. Cal.
2008).
15. See, e.g., Michael Geist, Canada Post Plays Grinch in Censorship Row, THE TORONTO
STAR, Jan. 26, 2009, at B02, available at http://www.thestar.com/sciencetech/article/577112 (The
Canada Post sent a takedown notification to remove a video criticizing the Post’s CEO);
Kembrew McLeod, Uri Geller Bends the Web to His Will: The ‘Psychic’ May Be Abusing
Copyright Law to Make Embarrassing Clips Vanish, L.A. TIMES, Sept. 18, 2007, at A21.
16. Lawrence Lessig, Copyright and Politics Don’t Mix, N.Y. TIMES, Oct. 21, 2008, at A29
(political videos being removed from YouTube); Letter from Trevor Potter, John McCain
presidential campaign to Chad Hurley, Chief Executive Officer, YouTube (Oct. 13, 2008),
(arguing that McCain campaign videos are being removed from YouTube by takedown notices
but should be left online because they are fair use), available at http://www.eff.org/files/
McCain%20YouTube%20copyright%20letter%2010.13.08.pdf.
17. Steven Seidenberg, Copyright in the Age of YouTube, ABA J., Feb. 2009, at 46, 48
(explaining that the title of the students’ video suggested the video contained copyrighted
Olympic material, but “a cursory look at the video would have demonstrated otherwise”).
18. Id.
19. 17 U.S.C. § 512(g) (2006).
20. See § 512(g)(2) (the statute only requires the ISP to notify the user of the takedown).
21. See Urban, supra note 9, at 679 (“[C]oncerns . . . about the number of flaws revealed in
our data would be somewhat diminished if we had found evidence of counternotices and
putback.” The authors speculated the lack of evidence of counternotices could be due to the
particular sample of their data).
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the DMCA requires ISPs to close the accounts of so-called repeat infringers,22
without defining what a repeat infringer is.23 So ISPs close users’ accounts
simply in response to receiving multiple takedown notifications, whether or not
the users were infringing anyone’s copyright.24
In August 2008 the case law took a dramatic turn. Internet user Stephanie
Lenz challenged a takedown notification on the grounds of fair use, and the
U.S. District Court for the Northern District of California denied defendant
Universal Music Corporation’s motion to dismiss.25 Lenz stated a valid claim
by arguing that Universal could not have believed in good-faith that Lenz’s
home video of her child dancing infringed the copyright of the video’s
background music, the Prince song “Let’s Go Crazy.”26 This was the first
successful, real claim attacking good-faith belief in the ten years since the
DMCA was enacted.27
This paper proposes that, given the extrajudicial nature of the takedown
process, the proper standard for sending a takedown notification is for
copyright owners to conduct an initial review of the website sufficient to form
a good-faith belief. In addition, courts should allocate the burden of proving
the copyright owner’s good-faith belief on the copyright owner, not on the
Internet user.
22. § 512(i)(1)(A) (“The limitations on liability established by this section shall apply to a
service provider only if the service provider . . . has adopted and reasonably implemented . . . a
policy that provides for the termination in appropriate circumstances of subscribers and account
holders of the service provider’s system or network who are repeat infringers.”).
23. David Nimmer, Repeat Infringers, 52 J. COPYRIGHT SOC’Y U.S.A. 167, 170 (2005)
(calling the repeat-infringer provision, 17 U.S.C. § 512(i), “entirely fuzzy” and an “amorphous
legacy from Congress”).
24. E.g., Perfect 10, Inc. v. CCbill, 340 F. Supp. 2d 1077, 1088 (C.D. Cal. 2004) (when the
ISP IBill receives a DMCA notification after having received previous complaints about the
same client, it terminates the client’s account). David Nimmer says IBill’s policy is
“unobjectionable.” Nimmer, supra note 23, at 215 n.223. See also Vernor v. Autodesk, Inc., 555
F. Supp. 2d 1164, 1165-66 (W.D. Wash. 2008); Chloe Albanesius, PC MAGAZINE.COM, Judge:
Veoh’s Transcoding Is Not Piracy, Aug. 28, 2008, http://www.pcmag.com/article2/0,2817,23291
29,00.asp (When “Veoh receives a complaint about a user after a first warning has been issued,”
it deletes the user’s account including all videos and blocks the user’s email address.).
25. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1157 (N.D. Cal. 2008).
26. Id. at 1153.
27. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D. Cal. 2004) (the
defendant Diebold “appear[ed] to have acknowledged that at least some of the emails [were]
subject to fair use doctrine” and never showed an email that contained protected content); see also
Press Release, Electronic Frontier Foundation, Viacom Admits Error—Takes Steps to Protect
Fair Use on YouTube (Apr. 23, 2007), available at http://www.eff.org/deeplinks/2007/04/
viacom-admits-error-takes-steps-protect-fair-use-youtube (MoveOn.org and Brave New Films
dismissed their lawsuit against Viacom when Viacom conceded it sent a takedown notification to
YouTube in error).
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II. THE LAW
A.
The Digital Millennium Copyright Act
Section 512 of the Digital Millennium Copyright Act was implemented
after a perceived breakdown in jurisprudence over how to apply concepts of
liability (including contributory and vicarious liability) to ISPs.28 Two cases in
particular caused alarm among ISPs: Playboy Enterprises, Inc. v. Frena29 in
1993, and Religious Technology Center v. Netcom On-Line Communication
Services30 in 1995.
In Frena, the operator of a discussion group on the Internet31 was held
directly liable for group members’ infringing activities.32 Members were
posting copyrighted images owned by Playboy Enterprises,33 and although the
operator claimed he was not aware that the images were being posted,34 his
service was distributing and displaying them in violation of the Copyright
Act.35 He was found liable for copyright infringement himself,36
notwithstanding his lack of knowledge of the infringing activities.37 Hence
Frena introduced serious risks for anyone operating email lists, message
boards, and other predecessors of services like YouTube, Facebook, and
MySpace.
Religious Technology Center was an infringement action against another
Internet discussion-group operator, Thomas Klemesrud—and against his ISP,
Netcom Communication Services, one of the largest ISPs in the United States
at the time.38 Netcom was not found directly liable for copyright infringement,
but a genuine issue of fact precluded Netcom’s motion for summary judgment
as to contributory liability.39 One of the discussion group’s members was
28. ROGER E. SCHECHTER & JOHN R. THOMAS, INTELLECTUAL PROPERTY: THE LAW OF
COPYRIGHTS, PATENTS AND TRADEMARKS 187 (2003).
29. Playboy Enter., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993).
30. Religious Tech. Ctr. v. Netcom On-Line Commc’n Serv., Inc., 907 F. Supp. 1361 (N.D.
Cal. 1995).
31. Playboy, 839 F. Supp. at 1554.
32. Id. at 1559.
33. Id. at 1554.
34. Id.
35. Id. at 1556–57.
36. Playboy, 839 F. Supp. at 1559.
37. Id. (“It does not matter that Defendant Frena may have been unaware of the copyright
infringement. Intent to infringe is not needed to find copyright infringement . . . thus even an
innocent infringer is liable.”).
38. Religious Tech. Ctr. v. Netcom On-Line Commc’n Serv., Inc., 907 F. Supp. 1361, 1366
(N.D. Cal. 1995). A direct infringement action was also brought against the subscriber to the
bulletin-board service, Dennis Erlich. Id. at 1365–66.
39. Id. at 1361–62.
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posting copyrighted Church of Scientology material.40 The copyright owner,
Religious Technology Center, asked Klemesrud and Netcom to either stop or
block the member’s posts.41 Netcom replied that it was unable to “screen”
each post individually, nor could it block one member without blocking all of
them.42 Still the court held that Netcom was potentially liable for contributory
infringement because it may have known about the infringing messages.43
Netcom had been notified of the infringing activity44 and it substantially
participated in infringement by circulating the messages.45
These and similar cases caused ISPs to lobby Congress for immunity from
lawsuits based on Internet users’ actions.46 It worked. The Senate report
pertaining to the DMCA states, “without clarification of their liability, service
providers may hesitate to make the necessary investment in the expansion of
the speed and capacity of the Internet. In the ordinary course of their
operations service providers must engage in all kinds of acts that expose them
to potential copyright infringement liability.”47 Congress also recognized that
ISPs’ actions are automatized, writing “[t]he DMCA was enacted . . . to
provide immunity to service providers from copyright infringement liability for
‘passive,’ ‘automatic’ actions in which a service provider’s system engages
through a technological process initiated by another without the knowledge of
the service provider.”48
The section of the DMCA concerning takedown notifications is 17 U.S.C.
§ 512: “Limitations on liability relating to material online.”49 Congress drafted
four subsections that provide safe harbors for the types of actions engaged in
by ISPs. The first, § 512(a), provides protection for the transmission and
routing of digital information though an ISP’s network.50 An example of this
would be the transmission and routing of email. The second, § 512(b),
provides protection for “system caching,” which means the temporary storage
40. Id. at 1365.
41. Id. at 1366.
42. Religious Tech. Ctr., 907 F. Supp. at 1366.
43. Id. at 1374–75.
44. Id. at 1374.
45. Id. at 1375 (comparing Netcom to a radio station rebroadcasting infringing programs).
46. S. REP. NO. 105-90, at 8–9 (1998) (“Title II . . . reflects 3 months of negotiations
supervised by Chairman Hatch and assisted by Senator Ashcroft among the major copyright
owners and the major OSP’s and ISP’s.”).
47. Id. at 8.
48. H.R. REP. NO. 105-551 pt.1, at 11 (1998) (quoted in ALS Scan, Inc. v. RemarQ Comty.
Inc., 239 F.3d 619, 625 (4th Cir. 2001)).
49. 17 U.S.C. § 512 (2006).
50. § 512(a) (“A service provider shall not be liable . . . for infringement of copyright by
reason of the provider’s transmitting, routing, or providing connections for, material through a
system or network .”).
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of material on a network.51 Often material is stored on a network temporarily
to allow Internet users to retrieve web pages more quickly. The third, § 512(c),
is the main section concerning takedown notifications and is titled,
“Information Residing on Systems or Networks at Direction of Users.”52 This
section affects the actual website content posted by Internet users.53 Finally,
the fourth section, § 512(d), describes information-location tools, such as
search engines. Liability is excused for referring or linking users to other
websites that contain infringing material.54
The third section, § 512(c), contains the notice-and-takedown protocol and
the good-faith-belief requirement discussed in this article. It provides that ISPs
are not monetarily liable for infringing material stored “at the direction of a
user” on the ISP’s systems as long as the ISP does not know about infringing
material,55 does not receive direct financial benefit from them,56 and
expeditiously removes any allegedly infringing material upon notification.57
Section 512 describes the proper elements of a takedown notification. The
notification must be a written communication that states the “complaining
party” has a “good faith belief” that “use of the material in the manner
complained of is not authorized by the copyright owner, its agent, or the
law.”58 Parties who do not have a good-faith belief that material on a website
is infringing are subject to liability under § 512(f). Specifically, any person
who “knowingly materially misrepresents” to an ISP that material or activity is
infringing is liable for damages incurred by the alleged infringer.59
Several cases since 1998 illustrate how the DMCA’s § 512 has been
treated in the courts.
B.
Diebold
In Online Policy Group v. Diebold,60 the U.S. District Court of the
Northern District of California held that the copyright holder, Diebold, Inc.,
51. § 512(b)(1) (“A service provider shall not be liable . . . for infringement of copyright by
reason of the intermediate and temporary storage of material on a system or network .”).
52. § 512(c)(1) (“A service provider shall not be liable . . . for infringement of copyright by
reason of the storage at the direction of a user.”).
53. § 512(b)(1)(A) (“the material is made available online by a person other than the service
provider”).
54. § 512(d).
55. § 512(c)(1)(A)(i).
56. § 512(c)(1)(B).
57. § 512(c)(1)(C).
58. § 512(c)(3)(A)(v). There are other requirements for the takedown notification, but they
are not relevant to this article.
59. § 512(f). Liability for knowing material misrepresentations under this section applies
equally to Internet users who submit a counter notification to their ISP to have their material
restored online.
60. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 2004).
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had violated the DMCA by sending a false takedown notification.61 Diebold
manufactures electronic voting machines, and to its chagrin, internal company
emails that expressed concerns about security issues with the machines were
leaked and posted on the Internet.62 Two college students posted the emails on
their websites, where an online newspaper called IndyMedia found them and
used them in an article criticizing Diebold.63 Diebold issued a takedown
notification to IndyMedia’s ISP, Online Policy Group (“OPG”), causing the
students and OPG to sue Diebold for knowingly misrepresenting copyright
infringement.64 In court, Diebold never produced specific emails that
contained copyrighted content65 and even admitted that some emails were
publishable under fair use.66
The court then held that Diebold had knowingly misrepresented infringing
activity by sending the takedown notification. It examined the meaning of a
“knowing misrepresentation” under § 512(f)67: “‘Knowingly’ means that a
party actually knew, should have known if it acted with reasonable care or
diligence, or would have had no substantial doubt had it been acting in good
faith, that it was making misrepresentations.”68 Since some emails were
“clearly subject to the fair use exception,”69 and Diebold had admitted this, it
was simple for the court to conclude that Diebold knew they were
misrepresenting the infringement claim in their takedown notices.70 The fact
that Diebold never filed suit against the alleged infringers also weighed against
them.71
This apparent victory for Internet users accused of copyright infringement
applied an objective reasonable-person standard. The court said “no
reasonable copyright holder” could have believed that emails discussing
technical details of voting machines were protectable under copyright law,72 an
analysis incorporating reasonableness from the definition of constructive
61. Id. at 1203.
62. Id. at 1197.
63. Id. at 1197–98.
64. Id. at 1198.
65. Online, 337 F. Supp. 2d at 1203.
66. Id.
67. Id. at 1204.
68. Id. (using the definitions of actual and constructive knowledge from Black’s Law
Dictionary).
69. Id.
70. Online, 337 F. Supp. 2d at 1204.
71. Id. at 1204–05 (“The fact that Diebold never . . . brought suit against any alleged
infringer suggests strongly that Diebold sought to use the DMCA’s safe harbor provisions—
which were designed to protect ISPs, not copyright holders—as a sword to suppress publication
of embarrassing content rather than as a shield to protect its intellectual property.”).
72. Id. at 1204.
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knowledge.73 The court’s finding that Diebold violated the DMCA’s knowingmisrepresentation clause seemed to herald hope for future Internet users
against oppressive takedowns.74 Only three months later, that hope was
dashed.
C. Michael Rossi
Rossi v. Motion Picture Association of America75 was the first case that
directly addressed the good-faith-belief language in the DMCA.76 The DMCA
says the copyright owner who sends a takedown notification must have a
“good faith belief that use of the material in the manner complained of is not
authorized by the copyright owner, its agent, or the law.”77 In affirming the
district court’s grant of summary judgment for the copyright owner, the Ninth
Circuit held that only a subjective standard, not an objective reasonableness
standard, is required.78
Plaintiff Michael Rossi’s website, InternetMovies.com, was shut down by
Rossi’s ISP in response to a takedown notification from the Motion Picture
Association of America (“MPAA”).79 The MPAA believed its copyrighted
movies were being distributed illegally through Rossi’s website. The website
teased in numerous places, “Join to download full length movies online now!
new movies every month,” “Full Length Downloadable Movies,” and “NOW
DOWNLOADABLE,” while showing images from the movies.80 In fact,
however, no movies were available.81 Rossi therefore argued that the MPAA
“did not have sufficient information to form a good faith belief.”82 It could not
have formed a good-faith belief that InternetMovies.com was infringing
copyrighted works without clicking on and accessing the suspicious links.83
According to Rossi, good-faith belief should include a reasonable investigation
of the website.84
73. BLACK’S LAW DICTIONARY 950 (9th ed. 2009) (“Knowledge that one using reasonable
care or diligence should have, and therefore that is attributed by law to a given person.”).
74. Electronic Frontier Foundation, Online Policy Group v. Diebold, http://www.eff.org/
cases/online-policy-group-v-diebold (“This landmark case set a precedent that allows other
Internet users and their ISPs to fight back against improper copyright threats.”).
75. Rossi v. Motion Picture Ass’n of Am., Inc., 391 F.3d 1000 (9th Cir. 2004).
76. Id. at 1004.
77. 17 U.S.C. § 512(c)(3)(A)(v) (2006) (emphasis added)
78. Rossi, 391 F.3d at 1007.
79. Id. at 1001–02.
80. Id. at 1002.
81. Id. at 1003.
82. Id. The district court had previously decided that the MPAA “had more than a sufficient
basis to form the required good-faith belief.” Id. at 1002 (quoting Rossi v. Motion Picture Ass’n
of Am., Inc., 67 U.S.P.Q. 1047, 1050 (D.Haw. 2003)).
83. Rossi, 391 F.3d. at 1003.
84. Id.
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But the court held the MPAA only needed to meet a subjective standard
before sending its takedown notification for several reasons.85 First because
federal statutes use subjective good faith and objective reasonableness as
distinct standards.86 So Congress would not have written “good faith” in the
statute if it had meant “reasonable belief.” Second because the liability section
of the DMCA, § 512(f), states that damages may be imposed only if the
copyright holder knowingly materially misrepresents activities cited in the
takedown notification.87 Knowing misrepresentation is incompatible with
Rossi’s suggested reasonableness standard; a belief may be unreasonable
without being a knowing misrepresentation that triggers liability under §
512(f).88 Such a result would render the good-faith-belief requirement in §
512(c) meaningless.
The court also said it would be unfair to make copyright owners liable for
being unreasonable in their belief. “A copyright owner cannot be liable simply
because an unknowing mistake is made.”89 Subjective good faith having been
established, Rossi was unable to raise a genuine issue of material fact whether
the MPAA had knowingly misrepresented that material or activity was
infringing. The Ninth Circuit granted the MPAA’s motion for summary
judgment.90
The Rossi opinion concludes with a reminder that Congress intended to
protect Internet users accused of infringement from “subjectively improper
actions by copyright holders.”91 Later cases and egregious takedowns suggest
that such protection has not been taking place, as courts and copyright owners
have relied heavily on Rossi’s subjective good-faith standard.
D. Karen Dudnikov & Troy Augusto
In Dudnikov v. MGA Entertainment, the District Court of Colorado granted
summary judgment for the copyright holder MGA Entertainment on the
plaintiffs’ knowing misrepresentation claim.92 Unfortunately for the plaintiffs,
the court only cited the belief by an MGA attorney that infringement was
taking place, without any facts and without considering the plaintiffs’ first-sale
85. Id. at 1004.
86. Id.
87. 17 U.S.C. § 512(f) (2006) (“Any person who knowingly materially misrepresents under
this section that material or activity is infringing . . . shall be liable for any damages, including
costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright
owner’s authorized licensee, or by a service provider.”).
88. Rossi, 391 F.3d at 1004–05.
89. Id. at 1005.
90. Id. at 1007.
91. Id. at 1005.
92. Dudnikov v. MGA Entm’t, Inc., 410 F. Supp. 2d 1010, 1018 (D. Colo. 2005).
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defense.93 The plaintiffs, Karen Dudnikov and Michael Meadors, were selling
a fleece hat on eBay bearing a copyright-protected appliqué of a “Bratz”
character on it.94 MGA held copyright and trademark rights in the Bratz
characters, and when MGA discovered the auction it sent a notification to eBay
to have the sale stopped.95 The plaintiffs sued, claiming MGA ignored
“copyright law in an attempt to control the on-line auction market.”96 They
were entitled by fair use and the first-sale doctrine to sell the fleece hat.97
The court applied the subjective good-faith standard established in Rossi.98
“[T]he Rossi decision [is] on point with regard to the salient issue in this case:
whether MGA was entitled, based on its good-faith belief that infringement
was occurring, to terminate the eBay auction of plaintiffs’ fleece hat.”99 MGA
had apparently relied on the good-faith belief of its attorney,100 and that is all it
needed. The court imposed the burden of proof on the plaintiffs to support
their claim with “substantial evidence” that MGA had knowingly
misrepresented copyright infringement.101 They had to “demonstrate material
facts.”102 The plaintiffs were unable to raise a genuine issue of fact and lost on
summary judgment.103 Their fair-use and first-sale arguments were not
addressed, brushed off like lint from a fleece hat.
Three years later the District Court for the Central District of California
accepted a plaintiff’s first-sale defense, in UMG Recordings v. Augusto,104
93. Id. at 1013. “The plaintiffs lawfully acquired the applique . . . [T]he subsequent re-sale
of the item falls wholly under the First Sale Doctrine.” Complaint of Tortious Business
Interference, Outrageous Conduct, Negligent Misrepresentation and Fraudulent Misrepresentation
Under Colorado Law and Perjury under 17 U.S.C. § 512 at 11, Dudnikov v. MGA Entm’t, Inc.,
410 F. Supp. 2d 1010 (D. Colo. Dec. 10, 2003) (No. 03-D-2512) [hereinafter Complaint of
Tortious Business Interference]. In copyright law, the first-sale doctrine is “[t]he rule that the
purchaser of a physical copy of a copyrighted work, such as a book or CD, may give or sell that
copy to someone else without infringing the copyright owner’s exclusive distribution rights.”
BLACK’S LAW DICTIONARY 711 (9th ed. 2009). The first-sale doctrine is included in the
Copyright Act of 1976, 17 U.S.C. § 109(a) (2006).
94. Dudnikov, 410 F. Supp. 2d at 1011.
95. Id. MGA notified eBay using eBay’s Verified Rights Owner’s Program, yet the court
construed the notification as a DMCA takedown. It applied both § 512(f), prohibiting “knowing
material misrepresentations that a material or activity is infringing,” and § 512(c)(3)(A)(v),
requiring “good faith belief,” to MGA’s notification. Id. at 1011–12.
96. Id. at 1011.
97. Complaint of Tortious Business Interference, supra note 93, at 5–6, 11.
98. Dudnikov, 410 F. Supp. 2d at 1012. The magistrate judge who first ruled on the case
noted the lack of authority on this issue and considered Rossi. Id. at 1016 n.3.
99. Id. at 1017.
100. Id.
101. Id. at 1012.
102. Id. at 1013.
103. Id.
104. UMG Recordings, Inc. v. Augusto, 558 F. Supp. 2d 1055 (C.D. Cal. 2008).
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finding no copyright infringement. But it also relied on Rossi in holding that
the copyright owner had not knowingly misrepresented its infringement
claim.105
In June 2008, UMG Recordings sued Troy Augusto for copyright
infringement for selling “personal use only” promotional CDs on eBay.106
UMG had sent the CDs to key individuals hoping to produce publicity for the
upcoming public release of the official CDs.107 Augusto bought the CDs from
shops and sold them on eBay as “rare collectibles.”108
In response to UMG’s suit, Augusto counterclaimed that UMG had
knowingly misrepresented copyright infringement when it sent a DMCA
takedown notification to eBay and squelched Augusto’s auctions.109 Relying
on the subjective good-faith standard, the court granted summary judgment in
favor of UMG on Augusto’s counterclaim.110 While the court did not seem to
impose a burden of proof on UMG, it found that UMG had sufficient
information to form its good-faith belief: (1) Augusto had once admitted that
selling promotional CDs was copyright infringement, (2) the wording on the
promotional CDs led UMG to believe it held copyright interests in the CDs,
and (3) “UMG . . . carefully documented Augusto’s actions in preparation for
this lawsuit.”111
Augusto responded that since the first-sale doctrine gave him the right to
sell the CDs, UMG’s takedown notification was a knowing
misrepresentation.112 Yet, much as fair use determinations are not always
clear, the law of the first-sale doctrine was unclear in this particular context,113
and because UMG had factually demonstrated its subjective good-faith belief,
the court granted summary judgment for UMG.114
This ruling was an improvement over Dudnikov because the court
considered the evidentiary basis for UMG’s good-faith belief; it did not simply
accept an attorney’s self-serving statement. Also unlike Dudnikov, the court
credited the first-sale doctrine, even though it ultimately found the law was not
105. Id.
106. UMG labeled the promotional CDs “personal use only,” and said that “[r]esale or
transfer [was] not allowed.” Id. at 1058.
107. Id.
108. Id.
109. UMG Recordings, 558 F. Supp. 2d at 1058. Id.
110. Id. at 1065.
111. Id.
112. Id.
113. The court had to determine, among other things, whether the language on the
promotional CDs created a license or a sale according to “economic realities.” Id. at 1060.
114. Id. at 1065 (“Augusto’s allegations . . . do not create a genuine issue of material fact . . .
given the uncertainty of the law in this area.”).
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clear enough to impute knowing misrepresentation and bad-faith belief to the
copyright owner.
III. STEPHANIE LENZ
This brings us to Lenz v. Universal Music Corporation,115 also known as
the “Dancing Baby Case.” In Lenz—which is still being litigated at this
time116—the plaintiff, Stephanie Lenz, survived a motion to dismiss her
complaint, which stated that Universal Music Corporation knowingly
misrepresented that Lenz’s video infringed its copyright. In February 2007,
Stephanie Lenz posted a video to the YouTube website for her friends and
family to see her one-year-old son, Holden, dancing.117 In the background one
can hear about 20 seconds of Prince’s song “Let’s Go Crazy.”118 Universal
sent a takedown notification119 to YouTube to have the video removed.120
YouTube removed the video one day later and alerted Ms. Lenz that “any
repeated incidents of copyright infringement could lead to the deletion of her
account and all her videos.”121 After consulting an attorney, Ms. Lenz sent a
counter notification pursuant to § 512(g)(3) to have her video re-posted, which
YouTube eventually did six weeks later.122 She then brought a lawsuit against
Universal in July 2007 for violating the DMCA’s knowing-misrepresentation
clause in § 512(f), which the court dismissed with leave to amend.123 Lenz had
relied on the definition of “knowledge” in the Diebold case, saying Universal
“knew or should have known” that Lenz’s video was not infringing.124 But
Diebold was distinguishable; for instance, Diebold’s emails were not protected
115. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150 (N.D. Cal. 2008).
116. See Lenz v. Universal Music Corp., No. C 07-03783 JF (PVT), 2010 U.S. Dist. LEXIS
47873 (N.D. Cal. April 20, 2010).
117. Lenz, 572 F. Supp. 2d at 1152.
118. The court noted that the song can only be heard “with difficulty.” Id.
119. The court rejected Universal’s argument that its notice was not a DMCA takedown
notification. Notice of Motion and Motion to Dismiss Plaintiffs’ Second Amended Complaint
Pursuant to Fed. R. Civ. Proc. 12(B)(6) at 1, Lenz, 572 F. Supp. 2d 1150 (N.D. Cal. 2008) (Case
No. CV 07-03783), 2008 WL 2242356.
120. Lenz, 572 F. Supp. 2d at 1152.
121. Id.
122. It is unclear why replacing the video took YouTube so long. The putback provision of §
512 only relieves service providers of liability for removal of material if the provider follows the
steps outlined in § 512(g)(2)—one of which is to replace the removed material in not more than
14 business days following receipt of the counter notification (unless the sender of the takedown
notification petitions for a court order to restrain the subscriber from further infringement). 17
U.S.C. § 512(g)(2)(C) (2006).
123. Lenz v. Universal Music Corp., No. C 07-03783, 2008 WL 962102, at *1–*3 (N.D. Cal.
Apr. 8, 2008).
124. Id. at *2.
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by copyright, whereas Prince’s song was clearly protected.125 And most
importantly Lenz had failed to “allege facts from which misrepresentation may
be inferred,”126 having only pleaded fair use was “self-evident.”127
After Lenz filed a renewed complaint, Universal fired back its second
motion to dismiss.128 This time, however, on August 20, 2008, Judge Fogel
denied the motion.129 Lenz’s complaint again alleged that Universal
knowingly misrepresented that her video was infringing in violation of §
512(f).130 The court phrased the issue as “[w]hether § 512(c)(3)(A)(v) requires
a copyright owner to consider the fair use doctrine in formulating a good faith
belief that ‘use of the material in the manner complained of is not authorized
by the copyright owner, its agent, or the law.’”131 Universal did not consider
the law, Lenz challenged, specifically the fair-use exception to copyright
infringement. It was only acting to appease its client Prince. Prince had been
outspoken about keeping his music off of the Internet,132 and Lenz quoted
Universal saying,
Prince believes it is wrong for YouTube . . . to appropriate his music without
his consent. That position has nothing to do with any particular video that uses
his songs. It’s simply a matter of principle . . . . That’s why, over the last few
months, we have asked YouTube to remove thousands of different videos that
133
use Prince music without his permission.
Whether the copyright holder must consider fair use before sending a
takedown notification was an issue of first impression.134 Universal responded
that § 512(c)(3)(A) does not mention fair use, and that fair use should only
become a consideration after a takedown notification is sent, when the
copyright holder is considering whether to file suit.135 The court looked at the
wording of the statute, which says “authorized by . . . the law.”136 And the law
125. Id. at *3.
126. Id.
127. Id. at *2–*3.
128. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1153 (N.D. Cal. 2008).
129. Id. at 1151.
130. Id. at 1153.
131. Id. at 1154 (emphasis added) (quoting 17 U.S.C. § 512(c)(3)(A)(v) (2006)).
132. Id. at 1152; see also Chris Francescani, The Home Video Prince Doesn’t Want You to
See, ABC NEWS, Oct. 26, 2007, http://abcnews.go.com/TheLaw/story?id=3777651&page=2 (“A
well-placed source directly involved in the situation confirmed to ABC News that Prince was
directly involved in seeking the takedown of Lenz’s video. ‘This guy scours the Internet,’ the
source said of the legendary artist, who once changed his name to an unpronounceable symbol
and wrote the word ‘Slave’ on his cheek until he won back the rights to his music from another
publishing company.”).
133. Lenz, 572 F. Supp. 2d at 1152–53 (quoting Francescani, supra note 132).
134. Id. at 1154.
135. Id.
136. Id.
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in question is section 107 of the Copyright Act of 1976, describing fair use.137
“An allegation that a copyright owner acted in bad faith by issuing a takedown
notice without proper consideration of the fair use doctrine thus is sufficient to
state a misrepresentation claim pursuant to Section 512(f) of the DMCA.”138
By requiring consideration of fair use, the DMCA successfully balances
copyright owners’ need to react quickly to potential infringement against
Internet users’ interest in “‘not having material removed without recourse.’”139
Whether an allegedly infringing work satisfies fair use is fact specific,140
and Universal expressed concern that it would not be able to know whether
potentially infringing material posted to the Internet was fair use.141 Even if a
copyright holder such as Universal did turn out to be wrong on such a question,
however, being wrong is not subjective bad faith as required by Rossi.142 The
court added,
The DMCA already requires copyright owners to make an initial review of the
potentially infringing material prior to sending a takedown notice; indeed, it
would be impossible to meet any of the requirements of Section 512(c) without
doing so. A consideration of the applicability of the fair use doctrine simply is
143
part of that initial review.
There was just enough evidence of “bad faith and deliberate ignorance” in
Lenz’s complaint to survive dismissal.144 Lenz pointed out that Universal is a
sophisticated corporation familiar with copyright actions, and the fact that
Prince was vocal about protecting his work suggested that Universal was
merely appeasing him.145 The court concluded by saying “[it] has considerable
doubt that Lenz will be able to prove that Universal acted with the subjective
bad faith required by Rossi, and following discovery her claims well may [sic]
be appropriate for summary judgment.”146
A copyright scholar once said that determining what is fair use is like
trying to nail jelly to a wall.147 Even so, it will be a shame if this case turns out
137. Id.
138. Lenz, 572 F. Supp. 2d at 1154–55.
139. Id. at 1155 (quoting S. REP. NO. 105-190, at 21 (1998)).
140. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1993) (“The task is not to be
simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-bycase analysis.” (citations omitted)).
141. Lenz, 572 F. Supp. 2d at 1155. Of course this is the same as the uncertainty about the
first-sale doctrine in UMG v. Augusto.
142. Id.
143. Id.
144. Id. at 1156.
145. Id.
146. Lenz, 572 F. Supp. 2d at 1156.
147. Prof. Francis M. Nevins, Copyright lecture at St. Louis University School of Law
(Spring 2009).
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like Augusto—that because of uncertainty in the law, the copyright owner did
not knowingly misrepresent infringement in its takedown notification. Joseph
Gratz, former chair of the ABA Section of Intellectual Property Law’s Special
Committee on the Digital Millennium Copyright Act, remarked, “If an attorney
for Universal had examined the video, counsel would have recognized that the
snippet of a Prince song . . . was almost certainly not infringement, but fair
use.”148 Hence “[b]uilding some due process back into the system is
necessary.”149
IV. ANALYSIS
The scarcity of judgments in favor of Internet users150 shows that proving
copyright owners’ subjective bad faith is extremely challenging. The plaintiffs
in Online Policy Group v. Diebold succeeded only because the defendant
admitted that its emails were not protected by copyright law.151 Since the
DMCA was enacted in 1998, Diebold has been the only sender of a takedown
notification held liable for knowing misrepresentation of claimed infringement
or bad-faith belief, even though copyright owners have been sending millions
of takedown notifications.152 One study found that over one-third of takedown
notifications contained major flaws.153 The same study observed that 41% of
notifications targeted business competitors,154 which prompts the question
whether the senders were trying to protect their intellectual property in good
faith. Can it be true that so many copyright owners, sending so many flawed
notifications, so seldom misrepresent infringement claims?
A.
Factual Basis for Good-Faith Belief
There is tension between Rossi v. Motion Picture Association of America
and Lenz v. Universal Music Corporation over what copyright owners must do
before they can justifiably send a takedown notification. According to Rossi,
the copyright owner only needs subjective good-faith belief and does not need
to conduct a full investigation of the website, let alone consider defenses such
148. Seidenberg, supra note 17, at 48.
149. Urban & Quilter, supra note 9, at 689.
150. One business owner whose website was removed due to a competitor’s takedown
notifications was unable to cite any cases in support of his claim of knowing misrepresentation
against the competitor. Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452, 468 (S.D.N.Y. 2007)
(noting the case law in the circuit was “sparse”).
151. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D. Cal 2004).
152. Delaney, supra note 11 (copyright-enforcement company Bay TSP sends over one
million takedown notices each month); Greg Sandoval, For YouTube Videos, a “Fair Use”
Boost, CNET NEWS, (2008), http://news.cnet.com/8301-1023_3-10022304-93.html (Viacom has
sent 350,000 takedown notices to YouTube).
153. Urban & Quilter, supra note 9, at 666.
154. Id. at 655.
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as fair use. But in order to have good faith, the copyright owner must have
reviewed the offending website to some degree. The question is, to what
degree?
When discussing Rossi, commentators do not discuss the MPAA’s actual
review of Michael Rossi’s website. Typically they state broadly that the
holding of Rossi was a subjective good-faith standard.155 Even Lenz cites
Rossi that way.156 In fact a third party notified the MPAA of possible
infringement by Rossi, and in response an MPAA employee personally
reviewed the website.157 The website’s text claimed that full movies were
“NOW DOWNLOADABLE.”158 The court said such claims virtually
compelled the conclusion that movies were being distributed in violation of
copyright.159
Rossi argued that all the MPAA had to do was click the links on the
website to verify that no movies were actually available. Indeed, not clicking
the links suggests that a superficial look at a website suffices to form a goodfaith belief. But in order to access those links, the MPAA employee would
have had to register with Rossi’s website and agree to his terms of service.160
Registering with the website is exactly the kind of onerous requirement that
would hinder copyright owners from adequately protecting their work. Thus
the commonly stated subjective-good-faith holding is only part of the Rossi
holding. The MPAA did review the website, was misled, and had a factual
basis for its good-faith belief.161
The Lenz court does not speak about a factual basis for good-faith belief,
even though it said the copyright owner must conduct an “initial review” of the
potentially infringing website.162 The court did not discuss the steps Universal
went through to identify infringing material in the video. But Lenz only
decided the sufficiency of the complaint, whereas in Rossi it was a motion for
summary judgment and more facts were available. As discussed above, in
Rossi the MPAA employee personally read Rossi’s website (although he or she
did not register). And claims on the website compelled the conclusion that
155. See, e.g., Matt Williams, The Truth and “Truthiness” About Knowing Material
Misrepresentations, 9 N.C. J. LAW & TECH. 1, 28 (Fall 2007); Charles J. Biederman and Danny
Andrews, Applying Copyright Law to User-Generated Content, L.A. LAW., May 2008, at 15–16
(“a subjective and not an objective good faith belief is the requisite standard for sending a
takedown notice”).
156. Lenz, 572 F. Supp. 2d at 1155–56.
157. Rossi, 391 F.3d at 1005.
158. Id.
159. Id.
160. Brief of Defendants-Appellees at 30–31, Rossi v. Motion Picture Ass’n of Am., Inc., 391
F.3d 1000 (9th Cir. 2004) (No. 03-16034).
161. Id. at 30 (citing Glus v. Brooklyn E. Dist. Terminal, 359 U.S. 231, 234–35 (1959)).
162. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1155 (N.D. Cal. 2008).
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movies were being distributed. So the MPAA had some factual basis for its
good-faith belief. In Lenz, Universal’s employees only needed to play the
YouTube video to hear Prince’s song. There were no misleading claims
though. So, assuming employees watched the video, Universal had at least
some factual basis for its good-faith belief, but less than the MPAA did. If, on
the other hand, they did not watch the video and only read the title, “Let’s Go
Crazy #1,” they had no evidence of infringement, only conjecture and
suspicion.
B.
Legal Basis for Good-Faith Belief
Unlike Lenz, Rossi did not address whether the copyright owner must
consider fair use and other infringement defenses when sending the takedown
notification. The different legal contexts explain this. Namely, fair use was
not an available defense in Rossi like it was in Lenz. Copyright-infringement
claims require showing that the defendant violated one of the exclusive rights
of the copyright owner: copying, adaptation, distribution, public performance,
public display, and public performance via digital-audio transmission.163 Only
certain defenses are available against each of those exclusive rights. The firstsale defense used in Augusto, for instance, is only available against the right of
distribution.164 In Rossi, offering illegal movies for download would have
violated the MPAA’s distribution right,165 and the fair-use defense is not
available against distribution.166 Lenz involved Universal’s right to copy, and
fair use is often a strong defense against that particular right.167
163. 17 U.S.C. § 106(1)–(6) (2006) (“[T]he owner of copyright under this title has the
exclusive rights to do and to authorize any of the following: to reproduce the copyrighted work . .
. to prepare derivative works . . . to distribute copies or phonorecords of the copyrighted work . . .
to perform the copyrighted work publicly . . . to display the copyrighted work publicly; and in the
case of sound recordings, to perform the copyrighted work publicly by means of a digital audio
transmission.”).
164. § 109(a) (“Notwithstanding the provisions of section 106(3),” where § 106(3) is the
copyright owner’s exclusive right “to distribute copies or phonorecords of the copyrighted work
to the public.” (emphasis added). § 106(3).
165. § 106(3) (“[T]he owner of copyright . . . has the exclusive rights . . . to distribute copies
and phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or
by rental, lease, or lending.”).
166. Distributing an entire copyrighted work almost certainly infringes copyright because
“[i]n determining whether the use made of a work . . . is a fair use the factors to be considered
shall include . . . the amount and substantiality of the portion used in relation to the copyrighted
work as a whole.” 17 U.S.C. § 107(3) (2006) (emphasis added); see also Harper & Row Publ’rs,
Inc. v. Nation Enter., 471 U.S. 539, 548–49 (1985) (magazine’s use of even “generous verbatim
excerpts” was not fair use).
167. Notice of Motion and Motion to Dismiss Plaintiffs’ Second Amended Complaint
Pursuant to Fed. R. Civ. Proc. 12(B)(6) at 4, Lenz v. Universal Music Corp., 572 F. Supp. 2d
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Fair use is described in 17 U.S.C. § 107, which lists four factors to weigh
in deciding whether a use is infringing or not: the purpose and character of the
use, the nature of the copyrighted work, the amount and substantiality of the
portion used in relation to the entire work, and the effect of the use on the
potential market for the copyrighted work.168 The last factor weighs heavily in
the fair-use determination,169 and Stephanie Lenz’s video cannot have
seriously affected Prince’s potential market. Lenz posted the video to share
with family members, and perhaps a dozen people would have seen it. In
addition, given the low audio quality and shortness of the clip, it could not
have substituted for Prince fans purchasing his CDs. Thus in terms of legal
defenses, fair use was a strong argument for Lenz that was not available to
Rossi.
Now that a court has recognized fair use in an Internet user’s complaint,
one can ask whether other defenses to infringement must be considered by
copyright owners. Need copyright owners consider so-called thin copyright,
such as when the work consists largely of facts in the public domain?170 Short
phrases such as titles?171 And other uncopyrightable elements?172 Not likely.
Even Lenz’s fair-use argument is unlikely to survive summary judgment
according to the judge.173 If a major music company’s legal department
honestly believes a home video of a dancing toddler infringed its copyright,
then fair use has negligible meaning. At the current stage of jurisprudence
involving the DMCA’s takedown provision, it is not likely that thin copyright
and other defenses will gain traction for Internet users either. Something more
is needed.
C. Shift the Burden of Proof
Courts should consider the fact that no judge reviews the allegation in a
takedown notification unless litigation ensues. And then the Internet user must
attempt to prove the alleged copyright owner’s bad faith. To restore balance,
1150 (N.D. Cal. 2008) (Case No. CV 07-03783) (claiming Lenz violated Universal’s
synchronization right, which derives from the right to copy).
168. § 107.
169. Harper & Row Publ’rs v. Nation Enter., 471 U.S. 539, 566 (1985) (“This last factor is
undoubtedly the single most important element of fair use.”).
170. Proven Methods Seminars, LLC v. Am. Grants & Affordable Hous. Inst., 519 F. Supp.
2d 1057, 1067 (E.D. Cal. 2007) (denying plaintiff’s preliminary injunction because the
copyrighted work consisted of facts and ideas in the public domain, rendering copyright
protection “thin”).
171. 37 C.F.R. § 202.1(a) (2009).
172. See Biosafe-One, Inc. v. Hawks, 524 F. Supp. 2d 452, 463–64 (S.D.N.Y. 2007)
(allegedly infringing text on competitor’s website was industry jargon, as well as minimal, and
therefore not infringing).
173. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1156 (N.D. Cal. 2008).
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courts should allocate the burden of proving good-faith belief on the copyright
owner. Is it fair for the Internet user to try to prove a subjective belief? To
divine whether the copyright owner was being honest? The user can hardly
know what steps the copyright owner went through to evaluate the allegedly
infringing material; for instance, whether human beings or only computer
software scanned the website.174 One software company that searches the
Internet for copyright infringement and piracy says it considers fair use and
advises its clients about fair use.175 But how would a user know such a
consultation took place?
During discovery, Lenz moved to compel production of communications
between Universal and Prince.176 Universal claimed attorney-client privilege
and work product, and refused. Fortunately it lost that gambit,177 but it will be
easy in the future for copyright owners and agents to structure their
communications so that they are privileged. Note also that in Augusto, UMG
offered evidence that it had “carefully documented Augusto’s actions in
preparation for [the] lawsuit.”178 Had that evidence been harmful to UMG, it
could have claimed it was work product.
The copyright owner should be required to describe the steps it took and
persuade the court of its good faith by a preponderance of the evidence. This
is not a proposal for a reasonable investigation, only that the copyright owner
need come forward with evidence sufficient to form a good-faith belief.179 For
legitimate complaints and honest mistakes, this will be easy to do and will not
chill the rights of copyright owners;180 they should already have such
information from their initial review of the website, as the DMCA requires.181
174. See Rossi v. Motion Picture Ass’n of Am., Inc., 391 F.3d 1000, 1005 n.7 (9th Cir. 2004)
(noting the MPAA initially identifies potentially infringing websites with the Ranger software
program, after which employees review the website).
175. Email from James Graham, Principal of Jim Graham Public Relations, to author (Jan. 15,
2009) (on file with Saint Louis University Public Law Review).
176. Lenz v. Universal Music Corp., No. C 07-3783 JF (RS), 2009 U.S. Dist. LEXIS 105180
(N.D. Cal. Oct. 29, 2009).
177. Id. at *4–*5 (finding that the specific agreement between Universal and Prince was a
business agreement, not legal, and rejecting the work-product claim only because Universal failed
to raise it earlier).
178. UMG Recordings, Inc. v. Augusto, 558 F. Supp. 2d 1055, 1065 (C.D. Cal. 2008).
179. In finding the MPAA had sufficient information, the Rossi court first looked at the
information on Rossi’s website then at what the MPAA did in response to that information.
Rossi, 391 F.3d at 1005.
180. See Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1204 (N.D. Cal. 2004)
(rejecting “likelihood of success on the merits” as the standard for copyright owners).
181. Lenz, 572 F. Supp. 2d at 1155 (“The DMCA already requires copyright owners to make
an initial review of the potentially infringing material prior to sending the takedown notice . . . .”).
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Moreover, in copyright-infringement actions the burden of proof is
crucial.182 For example, because copyright protection does not require
approval or verification by a federal authority, as is the case with patents,183
plaintiffs who allege copyright infringement must first establish that their work
is protectable by copyright. In the seminal Burrow-Giles Lithographic Co. v.
Sarony, the plaintiff had to establish that his photograph had sufficient
“originality,” “intellectual production,” and “conception on the part of the
author” to be a protected work under the Copyright Act.184
Another burden-of-proof issue in copyright litigation arises with the firstsale doctrine. The first-sale doctrine is “[t]he rule that a copyright owner, after
conveying the title to a particular copy of the protected work, . . . cannot
interfere with later sales or distributions by the new owner.”185 In civil cases,
courts put the burden of proving the first-sale defense on the defendant, as one
might expect.186 Thus the defendant (seller) must prove that the plaintiff
(copyright owner) previously conveyed title to copies of the work.187 In
Augusto, for example, Augusto needed to prove that UMG had sold or given
away its promotional CDs before he bought them. In criminal cases, however,
the courts are split over which party should carry that burden.188
Addressing first sale, Prof. Nimmer suggests the current allocation in civil
cases is wrong and that in both civil and criminal cases, the burden of proof
should be on the plaintiff-copyright owner instead of the defendant. This
means the plaintiff must first prove he or she did not sell or give away a copy
of the work in question.189 “It is true that this requires the plaintiff to prove a
negative,” Nimmer says, “but the result nevertheless appears justified in that it
involves ‘a matter uniquely within the knowledge of the plaintiff.’”190
182. 3 NIMMER ON COPYRIGHT § 12.11 (“The most critical question in litigation often boils
down to which party bears the burden of proof.”); SCHECHTER & THOMAS, supra note 28, at 36.
183. Diebold, 337 F. Supp. 2d at 1199. See generally Burrow-Giles Lithographic Co. v.
Sarony, 111 U.S. 53, 59–60 (1884) (the commissioner of patents ensures the validity of patents;
whereas copyright law does not have such “examination by a proper tribunal”) (cited in Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 346–47 (1991)).
184. Sarony, 111 U.S. at 58–60. Today registration of copyright establishes the prima facie
validity of the copyright. 17 U.S.C. § 410(c) (2006) (cited in 3 NIMMER ON COPYRIGHT §
12.11[A][1]).
185. BLACK’S LAW DICTIONARY 711 (9th ed. 2009); 17 U.S.C. § 109(a).
186. UMG Recordings, Inc. v. Augusto, 558 F. Supp. 2d 1055, 1059 (C.D. Cal. 2008).
187. Id. He also must prove the copies of the work were lawfully manufactured, that he was
the lawful owner of the copies and that he disposed of but did not reproduce additional copies.
Id.
188. 94 A.L.R. Fed. 101-106 (some courts impose the burden of proof on the government,
others on the defendant).
189. 3 NIMMER ON COPYRIGHT § 12.11.
190. Id. at 12.11[E]. (quoting Bell v. Combined Registry Co., 397 F. Supp. 1241, 1244 (N.D.
Ill. 1975)).
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Nimmer’s argument carries even stronger force when applied to the
DMCA’s good-faith requirement. With DMCA takedown notices, if the
burden were shifted to the copyright owners, they would not have to prove a
negative to demonstrate their good-faith belief. And, as with the first-sale
plaintiff, the factual basis of copyright owners’ good-faith belief is uniquely
within their own knowledge. Only the copyright owners know precisely how
they evaluated the website before sending the takedown.
Another reason to shift the burden of proof is the takedown procedure’s
resemblance to an ex parte temporary restraining order (“TRO”). TROs apply
to copyright impoundment actions under Federal Rule of Civil Procedure
65(f).191 They resemble the DMCA’s takedown provisions in that their
rationale is based on rapid response and preventing economic harm to
copyright owners.
Giving notice to the alleged infringer can cause
counterfeited goods to disappear and be sold before the copyright action can be
adjudicated.192 Proponents of a TRO must meet the same high standard as a
preliminary injunction,193 including likelihood of success on the merits and a
showing of irreparable harm.194 The key difference between TROs and the
current DMCA takedown procedure is that TROs do, in accordance with due
process, require approval by a judge. In addition, the TRO plaintiff is subject
to sanctions if the judge finds no basis for the copyright-infringement claim.195
In Diebold the plaintiffs argued unsuccessfully that a preliminaryinjunction standard should be used to evaluate Diebold’s takedown notices.196
They said Diebold should have shown a likelihood of success on the merits of
its copyright-infringement allegation.197 The court disagreed, saying that such
a high standard would “chill the rights of copyright owners”198 and that it
would be equivalent to an objective standard.199 So copyright owners should
not have to meet the high TRO standard. Rather, when copyright owners order
the removal of Internet users’ online content without an evaluation by a
191. FED. R. CIV. P. 65(b), (f). See, e.g., Epic Games, Inc. v. Altmeyer, 2008 WL 4853634
(S.D. Ill. Nov. 5, 2008) (“Rule 65(f) specifically provides that [Rule 65(b)] applies to copyright
impoundment proceedings”).
192. Harvey Shapiro, Ex Parte Applications for the Seizure of Counterfeit Goods Under the
Copyright Act, Practicing Law Institute, Oct. 2, 2002, Oct. 23, 2002 (PLI Order No. G0-014P).
193. K-2 Corp. v. Body Glove Int’l, LLC, 2009 WL 87446, at *2 (W.D. Wash. Jan. 13, 2009).
194. Id. (Both the traditional and the alternative tests require the movant to show that it will
suffer irreparable harm if relief is denied and that it will “probably prevail on the merits.” Id.
The alternative test also permits relief upon a showing that the balance of hardships “tips sharply
in [the movant’s] favor”). Id.
195. Bus. Guides, Inc. v. Chromatic Commc’ns Enter., Inc., 498 U.S. 533, 553–54 (1991).
196. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1204 (N.D. Cal 2004).
197. Id.
198. Id.
199. Id. (describing “likelihood of success on the merits” as “objectively measured”).
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judge—sometimes without any notice to the user200—shifting the burden of
proof and requiring copyright owners to substantiate their good-faith belief is
an equitable solution.
Finally, it is fundamental to rules of evidence that courts can shift the
burden of proof or the burden of production to the party with greater
knowledge of the facts or more available evidence.201 A party does not
generally bear the burden of proof and production on issues “peculiarly within
the knowledge the adversary.”202 For example, a bailor alleging a bailee has
negligently damaged the bailor’s goods shifts the burden of proof to the bailee
merely by showing that the goods were delivered to the bailee intact.203 This is
because circumstances of the damage are peculiarly within the bailee’s
knowledge.204 The bailee must then prove that he or she exercised due care.205
In the context of the DMCA, copyright owners know the factual basis of
their good-faith belief and have peculiar access to that knowledge. In Lenz,
Universal knows how it discovered the YouTube video, who reviewed it,
whether its legal staff considered fair use, and whether Prince instigated the
takedown notification himself. Universal has greater knowledge than Lenz
could have, and the facts are peculiarly within Universal’s knowledge. In the
case of a bailment, the bailor at least interacts with the bailee and has access to
relevant evidence, such as the condition of the building in which the bailee
stored the goods. But Stephanie Lenz had never interacted directly with
Universal and cannot know the inner workings of Universal’s legal
department. She is at a severe disadvantage. Shifting the burden of proof to
Universal would be an equitable solution.
This burden shift would make clear when copyright owners cannot
establish a prima facie case of infringement, as in Diebold,206 and when the
200. Chloe Lake, Bands and Fans Caught in Warner Music Copyright Crackdown on
YouTube, NEWS.COM.AU, Jan. 31, 2009, http://www.news.com.au/music-silenced-in-youtubecrackdown/story-0-1111118708654 (fifteen-year-old Juliet Weybret’s YouTube video of her
cover version of “Winter Wonderland” was removed without advance notice, as were official
videos uploaded to YouTube by the bands Death Cab for Cutie and Led Zeppelin).
201. 31A C.J.S. Evidence § 196 (citing Amaral v. Cintas Corp. No. 2, 163 Cal. App. 4th
1157, 1190 (Cal. App. 1 Dist. 2008) (in a dispute between employees and employer over city’s
living wage ordinance, the court applied burden shift to the employer to show which employees
did and did not work on city projects, because the employer was in the best position to know)).
202. 31A C.J.S. Evidence § 203.
203. Beck v. Wilkins-Ricks Co., 102 S.E. 313, 314 (N.C. 1920) (quoting Hanes v. Shapiro &
Smith, 84 S.E. 33, 37 (N.C. 1915)).
204. Id. (citing Nutt v. Davison, 131 P. 390, 391 (Colo. 1913)).
205. Id. at 315 (“[T]he failure to return the property does devolve upon the defendant the
burden of going forward with proof to show that it discharged its duty of requisite care of the
property while in its custody.”).
206. Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D.Cal. 2004)
(takedown sender never identified emails that were copyrighted).
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Internet user has a strong case for fair use, as in Lenz.207 It would prevent a
case like Dudnikov being decided based on the conclusory statement of an
attorney.208 Recall that in Dudnikov the court imposed the burden of proof on
the plaintiffs to support their knowing-misrepresentation claim with
“substantial evidence.” Had the burden of proving good faith been put on
copyright owner, MGA would have had to explain why the sale of the fleece
hat was not permitted by the first-sale doctrine. Assuming MGA had
information sufficient to form a good-faith belief, it could still easily have
avoided liability. The proposed burden shift would also dissuade frivolous
takedown senders who remove campaign videos in the heat of a presidential
election, as news stations did to both John McCain and Barack Obama in
2008.209
Despite the importance of burden of proof, the effect of the DMCA’s
takedown provisions has been to allow the copyright owners to escape any
burden.210 The copyright owners send takedown notifications attesting goodfaith belief, and the ISPs promptly remove the offending material. If the
Internet users sue, they must prove bad faith. To be sure, Congress designed
the takedown procedure to protect copyright owners against “massive
piracy.”211 But Congress also provided “important procedural protections for
individual Internet users to ensure that they will not be mistakenly denied
access to the World Wide Web.”212 Those procedural protections, including
the good-faith requirement and liability for knowing misrepresentations, ought
to be given their due.213 Requiring copyright owners to conduct an initial
review of websites sufficient to form good-faith belief and shifting the burden
of proving good-faith belief to copyright owners would accomplish Congress’s
goal.
V. CONCLUSION
The Supreme Court has recognized fair use as a fundamental protection of
the First Amendment against copyright law.214 Similarly the U.S. Court of
207. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1156 (N.D.Cal 2008) (complaint
alleged “sufficient allegations . . . of deliberate ignorance of fair use to survive the . . . motion to
dismiss”).
208. Dudnikov v. MGA Entm’t, Inc., 410 F. Supp. 2d 1010, 1013 (D. Colo. 2005).
209. Lessig, supra note 16.
210. Ordinarily the plaintiff must prove ownership, authorship, and fixation; or at least submit
proof of copyright registration in order to establish a presumption in favor of those elements.
SCHECHTER & THOMAS, supra note 28.
211. S. REP. NO. 105–90, at 8 (1998).
212. Id. at 9.
213. Lenz v. Universal Music Corp., 572 F. Supp. 2d 1150, 1156 (N.D. Cal. 2008).
214. Eldred v. Ashcroft, 537 U.S. 186, 190 (2003) (“[C]opyright law contains built-in First
Amendment accommodations . . . the ‘fair use’ defense codified at § 107 allows the public to use
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Appeals for the Ninth Circuit has underscored that a copyright owner who
sends a takedown notification swears under penalty of perjury: “Accusations of
alleged infringement have drastic consequences: A user could have content
removed, or may have his access terminated entirely. If the content infringes,
justice has been done. But if it does not, speech protected under the First
Amendment could be removed.”215
During the 2008 presidential election campaign, both candidates had
campaign videos removed from the Internet due to allegations of copyright
infringement.216 As political speech, the campaign videos were certainly fair
use. Yet that did not temper brazen news stations from sending DMCA
takedown notifications to remove the videos. The news stations knew then and
know now that the DMCA’s § 512(f) is impotent. Ultimately the burden of
proving bad faith is simply too high, and Internet users are not in position to
carry it. Perhaps the story of a toddler just learning to walk will help put the
First Amendment back on its feet.217
BENJAMIN WILSON
not only facts and ideas contained in a copyrighted work, but also expression itself for limited
purposes.”).
215. Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1112 (9th Cir. 2007) (explaining why a
DMCA takedown notification is ineffective if the sender has not declared “under penalty of
perjury . . . that he has a good-faith belief that the material is unlicensed.”).
216. Lessig, supra note 16.
217. Ms. Lenz reports that her son Holden has moved on from Prince and is now grooving to
grunge. Francescani, supra note 132. Stay tuned.

B.A., 1999, University of Iowa; J.D., 2010, Saint Louis University School of Law. I am grateful
to Prof. Yvette Joy Liebesman for her valuable insights and patient explanations of copyright law,
and for being what every student hopes to find: a mentor. I also extend my thanks to Karen
Dudnikov and Michael Meadors for sharing their fascinating experiences with me. To my wife,
Kara, thank you for your endless support and encouragement. And to my daughter, Ellie, thank
you for being so damned cute.
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